The Federal Circuit upheld the invalidity of patents claiming the use of rapamycin to treat restenosis, the renarrowing of an artery following angioplasty. The court held that “routine experimentation” to discover species of compounds within a claimed genus could constitute “undue experimentation,” since the discovery may require screening tens of thousands of compounds without any guidance from the patent.

The Federal Circuit dismissed a declaratory judgment action against Monsanto for lack of jurisdiction. Monsanto’s assurances constituted a legally binding disclaimer not to sue in cases of inadvertent contamination by their patented seeds. Since the plaintiffs had not removed themselves from the disclaimer’s protection, any “case or controversy” was moot.

Burdens of Discovery for Scientific Working Materials and Deliberative Documents

Written by: Evelyn Y. Chang
Edited by: Jessica Vosgerchian

In March of 2012, British Petroleum sought court enforcement of a subpoena for “any conversation or discussion” made by researchers from WHOI regarding their studies on the Deepwater Horizon oil spill. The court applied a balancing test that weighed BP’s need for the requested information against the burden placed on WHOI, and required the WHOI researchers disclose internal pre-publication materials relating to the studies cited in the government report.